throbber
By Facsimile Only
`
`October 11, 2001
`
`UNITED STATES DEPARTMENT OF COMMERCE
`Patent and Trademark Office
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`October 11, 2001
`
`Opposition No. 91116242
`
`Standard Knitting, Ltd.
`
`v.
`
`Toyota Jidosha Kabushiki
`Kaisha
`
`David Mermelstein, Interlocutory Attorney:
`
`On May 7, 2001, the Board issued an order suspending
`
`proceedings and denying applicant/counterclaimant’s
`
`(“applicant’s”) motion to compel opposer/respondent
`
`(“opposer”) to produce a privilege log.1 On May 11, 2001,
`
`the Board issued a further order regarding applicant’s
`
`amended counterclaim, and requesting further information
`
`from the parties in relation to applicant’s motion to take
`
`oral depositions abroad.
`
`Now before the Board are the following matters:
`
`1.
`
`2.
`
`Applicant’s motion to compel discovery (to the
`extent not decided in the May 7, 2001, order),
`filed April 25, 2001;
`
`Applicant’s request for reconsideration of the
`Board’s May 7, 2001, order, filed May 16, 2001;
`
`1 The May 7 order was issued after a telephone conference
`(initiated by applicant) among David Kera and Jordan Weinstein
`for applicant, Frank Bonini for opposer, and the undersigned
`interlocutory attorney.
`
`

`
`Opposition No. 116,242
`
`3.
`
`4.
`
`Applicant’s motion for leave to take foreign
`depositions upon oral examination, filed April 27,
`2001;
`
`Applicant’s second motion to amend its
`counterclaim, filed April 24, 2001, (and
`applicant’s proffered amended pleading);
`
`With the exception of the motion to amend the
`
`counterclaim, all motions have been fully briefed.2
`
`I
`
`By its motion, applicant requests the Board reconsider
`
`“(1) this Board’s pronouncements that Applicant misstated
`
`the “urgency” associated with this matter; and (2) this
`
`Board’s Order denying Applicant’s Motion to Compel Opposer
`
`to produce a listing of privileged documents.”
`
`Reconsideration of both issues is denied.
`
`A
`
`When applicant’s counsel contacted the undersigned
`
`interlocutory attorney to discuss the possibility of a
`
`telephone conference in this matter, the Board had none of
`
`applicant’s moving papers before it.3 Noting the number and
`
`2 The Board regrets the delay in addressing matters now at issue.
`
`3 Although the papers had already been filed, they had not yet
`been placed in the proceeding file, nor was the undersigned able
`to locate them. At the request of the undersigned, applicant’s
`counsel later submitted a copy of the papers by facsimile for
`reference during the telephone conference. In particular, the
`interlocutory attorney had not reviewed applicant’s letter of
`April 27, 2001, which formed no part of the decision to grant a
`telephone conference.
`
`2
`
`

`
`Opposition No. 116,242
`
`character of the issues applicant sought to have heard, the
`
`Board asked counsel why the motions should be heard by
`
`telephone, and in particular whether there was any urgency.
`
`Mr. Weinstein replied that discovery would be closing soon.
`
`It was indicated that applicant was eager to be heard
`
`expeditiously on its motion to extend.
`
`Since a motion to extend is of a type suitable for
`
`telephonic hearing, the Board agreed to a hearing on that
`
`issue.
`
`Shortly after the initial conversation, Mr. Kera
`
`left a message for the undersigned, requesting that the
`
`telephonic hearing also address the issue of whether opposer
`
`was required to produce a privilege log. Because of this
`
`issue’s concise, almost academic nature, the Board readily
`
`agreed.
`
`Applicant now argues that “no showing of urgency is
`
`required to request a telephone conference.” Applicant is
`
`absolutely correct, although the argument misses the point.
`
`The Board had inquired of counsel whether the matter was
`
`urgent, and was told that it was.
`
`Whether the request for a
`
`telephone conference might have been granted for a different
`
`reason is irrelevant.
`
`Nonetheless, the Board’s comments regarding applicant’s
`
`request for a telephone conference on its motion to extend4
`
`4 Applicant has not requested the Board to reconsider its
`comments regarding applicant’s motion to compel the production of
`a privilege log.
`
`3
`
`

`
`Opposition No. 116,242
`
`were dicta.
`
`As was clear from the Board’s May 7, 2001,
`
`order, applicant’s motion to extend was denied, not as a
`
`result of applicant’s conduct, but because the issue was
`
`moot in light of applicant’s motion to compel.
`
`Pursuant to
`
`Board rules, applicant’s motion to compel resulted in
`
`suspension of the proceeding, see Trademark Rule
`
`2.120(e)(2),5 making applicant’s extension request – the
`
`exigency of which formed the basis for applicant’s request
`
`and the Board’s grant of an telephone hearing – unnecessary.
`
`The Board did not state or find that applicant’s conduct was
`
`sanctionable.
`
`Applicant does not argue that the Board’s action in
`
`imposing suspension instead of granting its motion to extend
`
`was in any way incorrect.
`
`The Board’s view of applicant’s
`
`conduct thus has no bearing on either the substance or
`
`procedure at issue, and reconsideration of our comments in
`
`that regard would have no practical effect on this matter.
`
`Reconsideration is accordingly DENIED.
`
`B
`
`Applicant’s request for reconsideration of the Board’s
`
`ruling on whether opposer must produce a privilege log
`
`appears to be largely based on its continued conviction that
`
`opposer has not fully disclosed all responsive documents.
`
`5 “When a party files a motion for an order to compel discovery,
`the case will be suspended by the Trademark Trial and Appeal
`Board….”
`
`4
`
`

`
`Opposition No. 116,242
`
`Applicant points to certain ambiguous statements made in
`
`opposer’s discovery responses, and its abiding belief that
`
`it seems highly unlikely that counsel registered to
`practice before the Patent and Trademark Office … would
`maintain files complete except for the information
`Opposer intended to affirm under penalty of fine or
`imprisonment – which happens to be the information
`accused of being fraudulent.
`
`Request for Reconsideration at 5.
`
`Nonetheless, it is the Board’s understanding that Mr.
`
`Bonini represented during the telephone conference that all
`
`responsive documents have been produced, and that the only
`
`information “withheld” was that which was redacted from the
`
`documents.6 Regardless of applicant’s belief that more
`
`responsive documents exist, the Board sees no point to
`
`requiring opposer to produce a privilege log regarding
`
`documents opposer and its counsel say do not exist.
`
`Reconsideration is accordingly DENIED.
`
`II
`
`Applicant’s motion for leave to take oral depositions
`
`abroad raises more difficult legal issues.
`
`Although foreign
`
`depositions must normally be conducted upon written
`
`questions pursuant to Trademark Rule 2.124, the Board may
`
`6 The Board assumes that Mr. Bonini’s statements in this regard
`were made from first-hand knowledge, since the documents
`apparently involve his firm’s own files. If the Board somehow
`misunderstood Mr. Bonini’s statements regarding the existence of
`other responsive documents, he should immediately so notify the
`Board (and applicant).
`
`5
`
`

`
`Opposition No. 116,242
`
`allow oral depositions either by stipulation or upon motion
`
`for good cause.
`
`Trademark Rule 2.120(c).
`
`A
`
`1.
`
`Applicant seeks to take the depositions of Michael
`
`Wang, George Groumoutis, and Scott Yarnell, officers of
`
`opposer and citizens and residents of Winnipeg, Manitoba,
`
`Canada.7 Applicant states that it seeks information from
`
`the proposed deponents regarding, inter alia, applicant’s
`
`counterclaim based on fraud. Mr. Wang and Mr. Yarnell
`
`signed the applications and statements of use in question,
`
`and Mr. Groumoutis was identified as one of the persons who
`
`provided the information in opposer’s responses to
`
`applicant’s interrogatories. According to applicant,
`
`opposer has also identified Mr. Groumoutis (opposer’s chief
`
`operating officer) as the corporation’s Fed. R. Civ. P.
`
`30(b)(6) deponent with regard to a number of key issues.
`
`Applicant argues that oral depositions in Canada are
`
`essential, because the limitations inherent in depositions
`
`7 Applicant states that it has attempted to obtain the voluntary
`appearance of the deponents for an oral deposition in the United
`States. According to applicant, opposer has refused to
`voluntarily submit the witnesses for examination in the U.S. or
`to stipulate to oral depositions in Canada. Applicant has not
`sought to compel the witnesses to appear for depositions in the
`U.S., and is no doubt aware that the Board will not require a
`foreign resident to appear in the U.S. for a deposition. Jain v.
`Ramparts Inc., 49 USPQ2d 1429, 1431-32 (TTAB 1998); Rhone-Poulenc
`Industries v. Gulf Oil Corp., 198 USPQ 372, 374 (TTAB 1978); see
`TBMP §§ 404.03(c)(1), 520.
`
`6
`
`

`
`Opposition No. 116,242
`
`upon written questions would impair its ability to discover
`
`information regarding the often subtle (and sometimes
`
`evaded) question of intent to commit fraud.
`
`Opposer, on the other hand, argues that applicant has
`
`not demonstrated good cause to hold oral depositions in
`
`Canada and that any such proceedings would constitute a
`
`hardship, and would be disfavored under Canadian law.
`
`The Trademark Rules provide that
`
`2.
`
`The discovery deposition of a natural person residing
`in a foreign country who is a party or who, at the time
`set for the taking of the deposition, is an officer,
`director, or managing agent of a party, or a person
`designated under Rule 30(b)(6) or Rule 31(a) of the
`Federal Rules of Civil Procedure, shall, if taken in a
`foreign country be taken in the manner prescribed by
`§2.124 unless the Trademark Trial and Appeal Board,
`upon motion for good cause, orders or the parties
`stipulate, that the deposition be taken by oral
`examination.
`
`Trademark Rule 2.120(c)(1).
`
`Good cause under the cited rule
`
`must be considered on a case-by-case basis with reference to
`
`“the particular facts and circumstances in each situation.
`
`In determining such a motion, the Board weighs the equities,
`
`including the advantages of an oral deposition and any
`
`financial hardship that the party to be deposed might suffer
`
`if the deposition were taken orally in the foreign
`
`country….”
`
`Orion Group Inc. v. The Orion Insurance Co.,
`
`PLC, 12 USPQ2d 1923, 1925 (TTAB 1989).
`
`7
`
`

`
`Opposition No. 116,242
`
`B
`
`In the instant case, applicant seeks to take
`
`depositions in Winnipeg, Manitoba, Canada.
`
`Applicant points
`
`out the obvious – that the procedure set out for depositions
`
`upon written questions is cumbersome, and may hinder
`
`applicant’s ability to receive information without extensive
`
`reflection and coaching or editing by opposing counsel.
`
`Moreover, the procedure makes it virtually impossible to ask
`
`“follow-up” questions in response to any unexpected or vague
`
`response from the deponent.
`
`Neither party has argued that the proposed depositions
`
`would be unduly costly, and it does not appear likely that
`
`they would be unusually burdensome in this regard.
`
`The
`
`Board notes that Winnipeg is approximately 1245 miles from
`
`Washington, D.C., and is available by air either directly or
`
`by connections through major U.S. and Canadian cities.
`
`The
`
`parties would thus incur travel time and expenses consistent
`
`with many destinations within the continental United States.
`
`Opposer makes much of its argument that applicant’s
`
`claim of fraud is “baseless,” pointing out the high standard
`
`of proof required to demonstrate fraud in the procurement of
`
`a registration.
`
`Opposer’s argument in this regard misses
`
`the point.
`
`While fraud is difficult to prove, applicant has raised
`
`what appears on its face to be a non-frivolous claim, and
`
`8
`
`

`
`Opposition No. 116,242
`
`applicant is entitled to seek the information required to
`
`support its case. The scope of discovery is broad.
`
`Fed. R.
`
`Civ. P. 26(b)(1) (“Parties may obtain discovery regarding
`
`any matter, not privileged, that is relevant to the claim or
`
`defense of any party….”).
`
`Requiring a party to provide
`
`proof of every element of its claim prior to seeking
`
`discovery imposes an insurmountable obstacle.
`
`This is
`
`particularly so where the information to be discovered
`
`involves the question of intent, and is likely to be in the
`
`sole possession of the other party.
`
`Finally, opposer argues that allowing the depositions
`
`would be burdensome “in that discovery has already been
`
`provided.” While opposer’s point is not particularly clear,
`
`it appears to be arguing that applicant should be limited to
`
`one method of discovery (or at least to those already used).
`
`There is simply no legal basis for this argument.
`
`C
`
`An examination of the relative burdens of the parties
`
`does not, however, complete the analysis.
`
`The Board is
`
`cognizant that some countries are particularly sensitive to
`
`orders from U.S. tribunals regarding discovery or other
`
`legal proceedings proposed for completion within their
`
`territory. Indeed, some countries have enacted “blocking
`
`statutes,” making it illegal to either seek or provide
`
`discovery or testimony in regard to foreign judicial or
`
`9
`
`

`
`Opposition No. 116,242
`
`administrative proceedings.
`
`See, e.g., French Penal Code
`
`Law No. 80-538.8 Needless to say, the Board is not inclined
`
`to offend the sovereignty of a foreign nation or to require
`
`activities which would be illegal in the place they are to
`
`be carried out.
`
`By order dated May 11, 2001, the Board requested that
`
`the parties brief the following two issues related to the
`
`proposed foreign depositions:
`
`(1)
`
`(2)
`
`Is the taking of oral depositions permitted or
`ordered by a U.S. administrative or judicial body
`… legal under Canadian law?
`
`What (if any) judicial or administrative process
`(e.g., subpoenas) would be required from either
`U.S. or Canadian courts to effectuate such a Board
`order?
`
`Unfortunately, neither party’s response is entirely
`
`satisfying.
`
`Applicant submitted the declaration of Marianne
`
`Rivoalen, a Canadian attorney.9 Although Ms. Rivoalen’s
`
`8 Quoted in Societe Nationale Industrielle Aerospatiale et al. v.
`U.S. District Court For The Southern District Of Iowa, 482 U.S.
`522, 526 n. 6 (1987). Aerospatiale specifically addressed the
`question of whether the Hague Convention on the Taking of
`Evidence Abroad in Civil or Commercial Matters, March 18, 1970,
`23 U.S.T. 2555, supplanted the Federal Rules of Civil Procedure.
`The Court held that the Hague procedure was permissive, not
`mandatory. See also, Double J of Broward Inc. v. Skalony
`Sportswear GmbH, 21 USPQ2d 1609, 1612 (TTAB 1991). Although
`Canada is not a signatory to the Hague Convention, see U.S. State
`Department, Judicial Assistance in Canada,
`http://travel.state.gov/canada_legal.html (October 4, 2001), the
`Court’s balancing of the competing interests involved is
`instructive of the deference which should be accorded to a
`foreign sovereign in ordering or permitting discovery activities
`abroad.
`
`9 “[T]he court, in determining foreign law, may consider any
`relevant material or source, including testimony, whether or not
`
`10
`
`

`
`Opposition No. 116,242
`
`declaration indicates that she understood the context of the
`
`matter, her statement is somewhat ambiguous. While she does
`
`indicate that oral depositions are available in litigation
`
`in Manitoba, she does not specifically address the question
`
`at hand, namely, whether such depositions ordered by the
`
`Board to take place in Canada would be legal under Canadian
`
`law.
`
`Opposer, on the other hand, has submitted three
`
`Canadian judicial opinions which it argues indicate that
`
`“Canadian law does not favor depositions of its citizens in
`
`U.S. discovery proceedings.” The Board is able to accord
`
`little weight to two of the opinions, however, because they
`
`were issued by the courts of Ontario, and there is no
`
`evidence to suggest that the holdings are applicable in
`
`Manitoba.10
`
`The third opinion, Zingre v. The Queen, 2 S.C.R. 392
`
`(1981), involved the authorization by a Manitoba court of
`
`two Swiss judges to take the voluntary testimony of non-
`
`party Canadian citizens in furtherance of a Swiss criminal
`
`proceeding.
`
`Although the high court in Zingre stated that
`
`Canadian courts are often reluctant to allow such
`
`submitted by a party or admissible under the Federal Rules of
`Evidence.” Fed. R. Civ. P. 44.1.
`
`10 See Judicial Assistance in Canada, supra n. 8 (“[B]ecause the
`administration of justice is a matter left to each Canadian
`province’s jurisdiction, the application of courts’ assistance
`may not be uniform nationwide.”)
`
`11
`
`

`
`Opposition No. 116,242
`
`examinations when the purpose is for pre-trial discovery, it
`
`also stated that
`
`[w]here there is no limitation or infringement of
`Canadian sovereignty, and where the facts are such that
`justice can only be done by ordering the examination,
`the court should not refuse to make the order solely
`because the testimony relates to a pre-trial
`proceeding.
`
`Zingre, 2 S.C.R. at 404. However, the court went on to say
`
`that
`
`[t]his case is exceptional and differs in vital
`respects from the other cases to which the Court has
`been referred.
`The argument in favour of granting the
`order in the case at bar does not rest merely on the
`notion of ‘comity.’ It rests on treaty.
`
`Id. at 409.
`
`The Court dismissed the appeal, ruling against
`
`the defendant-appellants who were seeking to quash the
`
`examination by Swiss officials.
`
`D
`
`We find (under U.S. law) that the examination of the
`
`proposed deponents by oral deposition would not be unduly
`
`burdensome on either the parties or the deponents as
`
`individuals.
`
`On the other hand, requiring applicant to
`
`proceed with depositions upon written questions would be
`
`cumbersome and time consuming, and most likely would be
`
`relatively ineffective, particularly with respect to
`
`applicant’s claims of fraud. Nor is it likely that the
`
`information sought would be readily available elsewhere.
`
`The deponents are the persons who executed the documents in
`
`question, and the chief operating officer of opposer, the
`
`12
`
`

`
`Opposition No. 116,242
`
`latter of whom opposer admits is the most knowledgeable
`
`person with regard to many of the facts at issue.
`
`However, the Board is not satisfied by the evidence of
`
`record that the Board’s order would not be seen as an
`
`affront – albeit unintended – to the sovereignty of our
`
`northern neighbor. Unlike the case in Zingre, Canada is
`
`apparently not a party to any treaty on judicial assistance
`
`with the United States.
`
`See Judicial Assistance in Canada,
`
`supra n. 8.
`
`Moreover, the Board notes that those seeking
`
`the information in Zingre had requested the assistance of
`
`the Canadian courts, notwithstanding that the witnesses
`
`themselves did not oppose the examination.
`
`The witnesses
`
`here are obviously unwilling to testify voluntarily.
`
`After full consideration of the facts and circumstances
`
`of this matter, and the argument of the parties, the Board
`
`will allow applicant to proceed with oral depositions of
`
`Michael Wang, George Groumoutis, and Scott Yarnell, for the
`
`purposes stated, in Winnipeg, Canada.
`
`However, such
`
`proceedings must be accomplished in accordance with Canadian
`
`law. Therefore, if a party seeking discovery is generally
`
`required to make an application for leave to do so through
`
`the Canadian courts (or other government entity), nothing in
`
`this order should be construed as relieving it of such
`
`obligation.
`
`Likewise, if opposer continues to resist
`
`13
`
`

`
`Opposition No. 116,242
`
`discovery, it may resort to whatever Canadian process is
`
`appropriate.11
`
`III
`
`By its motion, applicant seeks to amend its
`
`counterclaim to include a claim for the cancellation of Reg.
`
`No. 2,408,997, issued November 28, 2001, on the same grounds
`
`as those previously alleged in applicant’s counterclaim.
`
`The registration issued from one of the applications pleaded
`
`in opposer’s notice of opposition. Inasmuch as opposer has
`
`not filed a response, the motion is granted as conceded.12
`
`Trademark Rule 2.127(a); Fed. R. Civ. P. 15(a).
`
`Opposer is
`
`allowed THIRTY DAYS from the mailing date of this order to
`
`file a reply to the counterclaim.
`
`IV
`
`A
`
`The remaining issues concern applicant’s motion to
`
`compel discovery. Applicant’s motion to compel makes three
`
`points: (1) opposer has failed to provide a privilege log
`
`11 To be absolutely clear, the Board is granting applicant
`leave to pursue oral depositions in Canada, rather than
`require applicant to use depositions upon written questions.
`The Board does not presume to have the authority to order that
`such depositions be taken on foreign soil.
`
`12 Applicant’s motion seems well-taken in any event. Discovery is
`still open, and it does not appear that opposer would be
`prejudiced or surprised by the amendment. The issues raised by
`the new claim for cancellation are substantially similar to those
`already at issue, and opposer itself pleaded the application from
`which Reg. No. 2,408,997 issued. See Fed. R. Civ. P. 15(a)
`(“leave shall be freely given when justice so requires”).
`
`14
`
`

`
`Opposition No. 116,242
`
`for documents withheld pursuant to an allegation of
`
`privilege; (2) opposer’s claim of privilege must fall in
`
`light of applicant’s claim of fraud; and (3) documents
`
`prepared for prosecution of the applications which resulted
`
`in the subject registrations – as opposed to documents
`
`prepared for litigation – are not the proper subject of a
`
`claim of privilege.
`
`Motion to Compel at 1-2.
`
`Applicant
`
`also asserts that opposer’s objections based on vagueness
`
`and overbreadth must be overruled.
`
`Motion to Compel at 12-
`
`13. The Board rejected applicant’s first point in the May
`
`7, 2001, order.
`
`B
`
`1.
`
`Applicant claims that it has made out a prima facie
`
`case of fraud on the PTO, and that opposer’s claims of
`
`privilege should thus be overruled on the basis of the
`
`“crime-fraud” exception to the general rule on attorney-
`
`client and work-product privilege. Applicant is mistaken on
`
`both counts.
`
`Under the crime-fraud exception to the attorney-client
`
`and work-product privileges, no privilege attaches to
`
`communications made to an attorney or the attorney’s work-
`
`product when the communication is in furtherance of a fraud.
`
`E.g., General Electric Co. v. Hoechst Celanese Corp., 15
`
`USPQ2d 1673, 1683-84 (D.C. Del. 1990).
`
`Each element of
`
`15
`
`

`
`Opposition No. 116,242
`
`fraud must be proved by prima facie evidence. In re
`
`Spalding Sports Worldwide, Inc., 53 USPQ2d 1747, 1753 (Fed.
`
`Cir. 2000) (finding “must be based on independent and clear
`
`evidence of deceptive intent together with a clear showing
`
`of reliance….”)
`
`a.
`
`To begin with, it is questionable whether applicant has
`
`made out a prima facie showing of fraud on the PTO on this
`
`record.13 The parties seem to agree that registrations
`
`subject to the counterclaims are based on applications that
`
`contain misstatements as to which goods were actually in
`
`use. Applicant has made serious allegations of fraud which
`
`it is entitled to explore. However, the evidence currently
`
`of record does not demonstrate the crucial element of
`
`intent.
`
`While applicant is not required to prove fraud
`
`conclusively by direct evidence, neither is applicant
`
`entitled to rummage through opposer’s and opposer’s
`
`attorney’s otherwise privileged communications upon a mere
`
`allegation.
`
`b.
`
`Even more seriously, however, applicant confuses the
`
`standard for proving fraud on the PTO and the considerably
`
`13 The Board does not agree with applicant that opposer’s attempt
`to amend the registrations at issue is an admission of fraud. At
`most, the amendment seems an “admission” that the information in
`the registrations is currently incorrect, although it is not
`necessary to decide the issue at this point.
`
`16
`
`

`
`Opposition No. 116,242
`
`higher requirement of proof necessary to vitiate the
`
`attorney-client privilege.
`
`The most relevant case on point
`
`is the recent decision of the Board’s primary reviewing
`
`court in In re Spalding.14 In Spalding, the Federal Circuit
`
`discussed – in granting the extraordinary relief of mandamus
`
`– when the crime-fraud exception applies to fraud on the
`
`PTO. Spalding arose from a patent infringement matter in
`
`which the defendant sought discovery of the invention record
`
`which led to the filing of the asserted patent.
`
`Over the
`
`plaintiff’s objections, the district court granted the
`
`defendant’s motion to compel based on the crime-fraud
`
`exception and ordered production of the documents sought.
`
`The Federal Circuit then granted the plaintiff’s application
`
`for a writ of mandamus, and in doing so, refuted the
`
`arguments applicant makes in this case.
`
`The Federal Circuit held that fraud on the PTO (or the
`
`more inclusive “inequitable conduct”) is not enough to
`
`constitute a waiver of privilege regarding attorney-client
`
`communications for the purposes of patent prosecution.
`
`To invoke the crime-fraud exception, a party
`challenging the attorney-client privilege must make a
`prima facie showing that the communication was made “in
`furtherance of” a crime or fraud.
`This court has
`previously distinguished "inequitable conduct" from
`common law or “Walker Process”[15] fraud.
`***
`
`14 Applicant cites Spalding in passing, although the relief it
`requests is contrary to the case’s holding.
`
`15 Walker Process Equip., Inc. v. Food Mach. and Chem. Corp., 382
`U.S. 172, 174 USPQ 404 (1965).
`
`17
`
`

`
`Opposition No. 116,242
`
`Consistent with the Supreme Court's analysis in Walker
`Process, … we have distinguished “inequitable conduct”
`from Walker Process fraud, noting that inequitable
`conduct is a broader, more inclusive concept than the
`common law fraud needed to support a Walker Process
`counterclaim….
`Inequitable conduct in fact is a lesser
`offense
`than common law fraud, and includes types of
`conduct less serious than “knowing and willful” fraud.
`
`* * *
`
`Because severe penalties are usually meted out to the
`party found guilty of such conduct, [common law] fraud
`is generally held not to exist unless the following
`indispensable elements are found to be present: (1) a
`representation of a material fact, (2) the falsity of
`that representation, (3) the intent to deceive or, at
`least, a state of mind so reckless as to the
`consequences that it is held to be the equivalent of
`intent (scienter), (4) a justifiable reliance upon the
`misrepresentation by the party deceived which induces
`him to act thereon, and (5) injury to the party
`deceived as a result of his reliance on the
`misrepresentation.
`
`Spalding at 1752-53 (internal citations and quotations
`
`omitted).
`
`The Board sees no reason why the Spalding holding is
`
`not equally applicable to trademark matters. Needless to
`
`say, in light of applicant’s failure to demonstrate even
`
`fraud on the PTO on this record, applicant has not met the
`
`high standard required to vitiate opposer’s claims of
`
`privilege.
`
`2.
`
`Applicant further claims that the work-product
`
`privilege does not apply to documents prepared in connection
`
`with the prosecution of an application.
`
`Motion to Compel at
`
`18
`
`

`
`Opposition No. 116,242
`
`6-9. The Federal Circuit resolved this issue as well in the
`
`Spalding case.
`
`“[T]he central inquiry,” held the court, “is
`
`whether the communication is one that was made by a client
`
`to an attorney for the purpose of obtaining legal advice or
`
`services.”
`
`Spalding at 1751 (citations omitted).
`
`In a footnote, the Court stated their awareness of
`
`district court holdings that privilege did not apply to
`
`certain information communicated to an attorney in
`
`connection with PTO filings, but “conclude[d] that the
`
`better rule is the one articulated in this case.” Spalding
`
`at 1753 n. 3.
`
`Here, applicant makes no argument that the
`
`specific communications involved were not made for the
`
`purpose of obtaining legal advice, only that privilege does
`
`not apply.
`
`C.
`
`Finally, applicant argues that opposer’s claims of
`
`over-broadness, vagueness, and indefiniteness should be
`
`overruled. Opposer neither explained the specific basis for
`
`its objections nor addressed this issue in its response to
`
`applicant’s Motion to Compel.
`
`Neither applicant nor the
`
`Board should be left to guess the specific grounds for
`
`opposer’s objection.
`
`D.
`
`In consideration of the record and the argument of the
`
`parties, applicant’s motion to compel is denied as to matter
`
`19
`
`

`
`Opposition No. 116,242
`
`subject to opposer’s claim of attorney-client privilege or
`
`work-product, and granted with respect to matter withheld
`
`pursuant to opposer’s objections that the discovery requests
`
`were overbroad, vague, or indefinite.16
`
`V
`
`To conclude, applicant’s request for reconsideration of
`
`the Board’s May 7, 2001, order is DENIED.
`
`Applicant’s
`
`motion for leave to take oral depositions in Canada is
`
`GRANTED, to the extent set out herein.
`
`Applicant’s second
`
`motion to amend its counterclaim is GRANTED, and applicant’s
`
`motion to compel discovery is GRANTED in part and DENIED in
`
`part.
`
`Opposer is allowed until THIRTY DAYS from the date of
`
`this order in which to supplement its discovery responses.
`
`In the event opposer does not respond, the Board may
`
`entertain a motion for discovery sanctions pursuant to
`
`Trademark Rule 2.120(g).
`
`Opposer is allowed the same THIRTY DAYS in which to
`
`file a reply to the amended counterclaim.
`
`Trial dates, including the close of discovery, are
`
`reset below.
`
`In the event that these proceedings are
`
`unusually delayed by the potential Canadian depositions
`
`discussed herein, the parties are requested to inform the
`
`16 Any information or documents which is subject to both
`objections remains privileged.
`
`20
`
`

`
`Opposition No. 116,242
`
`Board promptly, and to timely request suspension or
`
`resetting of dates, as appropriate.
`
`D ISC O V ER Y PER IO D TO C LO SE:
`
`Testim ony period for party in position of plaintiff to
`close: (opening thirty days prior thereto)
`
`A pril 9, 2002
`
`July 8, 2002
`
`Testim ony period for party in position of defendant to
`close: (opening thirty days prior thereto)
`
`Septem ber 6, 2002
`
`R ebuttal testim ony period to close: (opening fifteen days
`prior thereto)
`
`O ctober 21, 2002
`
`In each instance, a copy of the transcript of testimony
`
`together with copies of documentary exhibits, must be served
`
`on the adverse party within thirty days after completion of
`
`the taking of testimony. Trademark Rule 2.l25.
`
`Briefs shall be filed in accordance with Trademark Rule
`
`2.128(a) and (b). An oral hearing will be set only upon
`
`request filed as provided by Trademark Rule 2.l29.
`
`.oOo.
`
`21

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